WIPO Rediscovers Consensus As Delegates Agree PCT Amendments

A World Intellectual Property Organization working group considering amendments to the Patent Cooperation Treaty ended a weeklong meeting in relative agreement, in contrast to recent WIPO meetings. Agreement was found on delicate issues such as reduction of fees or procedures for appointing international authorities. Integration of the Patent Prosecution Highway, however, was not accepted.

The seventh session of the Patent Cooperation Treaty (PCT) Working Group took place from 10-13 June. The 18-page summary [pdf] by Chair Victor Portelli of Australia was adopted with unusual speed with few textual changes, although some paragraphs on unfinished discussions were added.

On the agenda [pdf] of the session, some issues did not meet with consensus but differences were resolved over the week. This was the case for the issue of “fee reductions [pdf] for certain applicants from certain countries, notably developing and Least Developed Countries (LDCs).”

A proposed amendment [pdf] to the schedule of fees issued on 11 June, including criteria for fee reductions based on a combination of income and innovation-based factors, did not at first meet the approval of the working group.

In particular, Kenya, for the African Group, said the new scheme would not serve the original purpose of the proposed amendment, which is to increase the use of the PCT by applicants from developing countries and LDCs. That was because under the new rule, five countries from the European Union would benefit from the fee reductions.

However, consensus was found with several conditions, such as that the criteria for fee reductions be revised every five years and that a progress report be submitted after two years of implementation. A slightly revised version [pdf] of the proposed amendment was adopted, and a paragraph on the review of the implementation added to the summary by the chair.

Also added to the summary was that a number of delegations requested the convening of the Committee for Technical Assistance provided for in Article 51. The United States expressed reservations about such convening.

An alternative text in the summary by the chair, drafted in case there was no consensus on the amendment, was thus deleted.

Under the amendment on fee reduction, a 90 percent reduction will apply to international applicants that belong to a state whose per capita gross domestic product is below US$25,000. In addition, nationals and residents who are “natural persons” of those states must have filed less than 10 international applications per year (per million population), or 50 international applications per year (in absolute numbers). The amendment is expected to take effect on 1 July 2015.

International Patent Authorities

Another prickly issue also resolved at the end of the meeting was the appointment of international authorities, and in particular the procedures for appointing such authorities. According to the chair’s summary, several delegations who took the floor agreed with the need to improve the procedures for appointment of an office as an international authority.

The delegation of Hungary, which spoke on behalf of the Visegrad Group of countries (Czech Republic, Hungary, Poland and Slovakia) introduced the intention of the group to establish a new PCT international authority for Central and Eastern Europe, according to the chair’s summary. The delegation of Hungary proposed a text [pdf] for the appointment of international authorities on 12 June.

On the final day, a revised version [pdf] of the original document on the appointment of international authorities was issued after informal discussions led by the chair, and adopted by the working group. The document, which presents draft decision paragraphs to be included in the summary by the chair, details the procedures that the working group and a draft recommendation to the PCT Assembly for adoption of those procedures and implementation after the close of the PCT Assembly.

Integration of the PPH

The United Kingdom and United States had previously submitted a proposal for the formal integration of the Patent Prosecution Highway (PPH) into the PCT. The PPH is a collaboration between a range of – mostly developed – countries’ patent offices, by which those offices share data and can provide accelerated patent examination.

According to the summary by the chair, several delegations supported the proposal while the African Group said the proposal was premature, “since it presupposed that all patent Offices had the same capability and expertise to undertake examination.”

Brazil submitted a paper [pdf] explaining its opposition to the integration of the PPH into the PCT. In particular, Brazil raised legal issues, for example that “the incorporation of the PPH into the PCT cannot be undertaken simply as a minor matter that could be resolved by means of a modification to the Regulations.”

India, according to the summary by the chair, said that the World Trade Organization Agreement on Trade-Related Intellectual Property Rights (TRIPS) provides flexibilities in patent law and they believed that the proposal could lead to harmonisation of substantive laws “through encouraging the reuse of work without undertaking further examination in the national phase.”

Several developing countries indicated that the incorporation of the PPH into the PCT would require the convening of a diplomatic conference (a high-level treaty negotiation). No consensus was found to take the proposal forward, according to several sources.

Reports Noted

The PCT Working Group also noted several documents, such as the secretariat’s document on estimated PCT fee elasticity and a document on fee reductions from small and medium-sized enterprises, universities and not-for profit research institutes.

On fee reduction for SMEs, the working group agreed on 12 June that there was no clear way forward and no further work on the issue would take place until a member state makes a concrete proposal.

On fee reduction for universities, the working group requested that the secretariat work with the WIPO chief economist to provide a supplementary study on possible fee reductions for universities, and possible impact on the PCT fee income, to be discussed at the next session.

Not English Only!

Spain and Mexico requested at the close of the meeting that be reflected in the chair’s summary the discussions that took place during the week on the translation of the PCT Working Group documents.

The following language was thus added to the summary:

“In response to a suggestion by the Secretariat to provide a transcript of the discussions in the Working Group in English only, as the report of the Working Group, several delegations recalled that discussions on the WIPO language policy were ongoing in the Program and Budget Committee, which would be the only appropriate body to discuss and decide on this matter.”

Also added was:

“The Working Group noted that a verbatim report would be established in six languages and adopted by correspondence.”

The next meeting of the PCT Working Group is tentatively scheduled for May/June 2015.